Dr. Triantafyllos Tafas, represented by Kelley, Frye and Warren LLP [1] filed a declaratory judgment action in the Eastern District of Virginia, arguing that the new continuation rules are null and void, and is also seeking a preliminary and permanent injunction prohibiting the USPTO from putting the new rules changes into effect.
Dr. Tafas is an inventor on more than seventeen (17) patents pending and on eight (8) U.S. issued patents. He is also Chief Technology Officer (CTO) and co-founder at Ikonisys [2].
The complaint alleges that the USPTO exceeded its Congressionally-delegated rulemaking authority and that the new rule changes specifically violate Section 120, 132, and 365 of the Patent Act. It is further asserted that USPTO failed to comply with the Administrative Procedure Act in promulgating the new rule changes. The suit also alleges that the USPTO has engaged in retroactive rulemaking and has failed to consider USPTO-induced reasons for multiple continuation filings.
From the complaint, Dr. Tafas seeks:
(1) to prevent Defendants from implementing Sections 1.75 and 1.78 of certain new federal regulations published by the USPTO at 72 Fed. Reg. No. 161 on August 21, 2007 (with an effective date of November 1, 2007) entitled “Changes to Practice for Continuing Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications; Final Rule” (to be codified at 37 CFR Part 1 and sometimes collectively referred to herein as the “Revised Rules”);
(2) to have the Revised Rules declared null, void and without legal effect as being beyond the rule making power of the USPTO and inconsistent with various federal statutes and Article I, Section 8, Cl. 8 and the Fifth Amendment to the United States Constitution; and
(3) for the issuance of a Writ of Mandamus requiring Defendants to comply with the requirements of the Administrative Procedure Act, 5 U.S.C. §§1 et seq. (the “APA”) in promulgating any further rules in the future concerning the subject matter of the Revised Rules.
Dr. Tafas is looking for a preliminary injunction preventing the Revised Rules from taking effect because they substantially change the regulatory landscape under which inventors, like Dr. Tafas, have traditionally operated and, once effective, will frustrate the purposes of the U.S. Patent laws by preventing Dr. Tafas and other similarly situated inventors from realizing the full economic potential of their work.
Dr. Tafas believes that the Revised Rules should be preliminarily and permanently enjoined and declared null and void because, among other things, they violate: (1) Sections 2, 120, 131, 132 and 365 of the Patent Act (35 U.S.C. §§ 1 et seq.) by exceeding the rule making authority delegated to the Defendants by Congress; (2) Sections 553(c) and 706(2) of the APA (5 U.S.C. §§ 553(c) and 706(2)) by, among other things, purporting to enact rules with retroactive effect; failing to consider all the relevant matter presented as required by 5 U.S.C. § 553(c); and, by promulgating rules that are arbitrary, capricious, an abuse of discretion, otherwise not in accordance with law, contrary to Plaintiffs constitutional rights and in excess of the USPTO’s statutory jurisdiction and authority; and (3) Article I, Section 8, Cl. 8 and the Takings Clause of the Fifth Amendment of the United States Constitution.
Read a copy of the complaint here (link [3])